Basically, are third party submissions (35 U.S.C. 122(e)) a proper subset of protests (37 CFR 1.291) in terms of what evidence and arguments can be presented?

I have the opportunity to file a protest on an unpublished continuation application. Although I don't know the claims, I plan to make general arguments against patentability (103, 112, IC) based on claims of the issued parent application. After doing so, I assume there is no benefit to filing a third party submission?


After publication, when you can see the claims, you might find that the references you previously submitted are not as on-target as you assumed and end up filing both. A consideration might be that a third party submission can be done anonymously.

| improve this answer | |
  • 1
    Good point about newly seen claims providing more information. Though I will say, both protests and third party submissions require that a "real" person signs off on them (verifying that they comply with the rules), though the real party in interest does not have to be identified in either case (thereby "anonymous"). – user132162 Apr 24 '18 at 1:08

Your Answer

By clicking “Post Your Answer”, you agree to our terms of service, privacy policy and cookie policy

Not the answer you're looking for? Browse other questions tagged or ask your own question.